IMPORTANCE OF THE ESTABLISHMENT OF PATENT RIGHTS

Patent right in Vietnam is established for an invention or a utility solution on the basis of registration. Vietnam adopts the first-to-file principle for the registration system. The law determines priority based on the date of the first application and gives the rights to the party who is the first to file a patent application. The Vietnam Intellectual Property Office (VNIPO) performs a two-stage examination procedure for a patent application including formality examination, publication and substantive examination before deciding to grant a patent.

OUR SERVICES

D&N International has extensive experience in filing and prosecution of patent applications for inventions and utility solutions in various fields such as chemicals, biotechnology, pharmaceuticals, food industry, automobile, luxury products, entertainment, multi-media, information technologies, publishing, telecommunications, electrics and electronics, computers, mechanicals, etc. We represent patent applicants/proprietors/inventors at any stage from acquisition to protection of patent rights and are capable to provide them with optimal solution to each of their particular problems.

Our patent services in Vietnam include, but not limited to:

• Patent Searches including searches based on technical keywords, patent classification, applicant name, priority application number and other types of searches upon specific request;
• Providing professional advice on patentability, patent validity and infringement;
• Filing and prosecution of patent applications including translating and/or drafting the specification of invention/utility solution;
• Official Actions and Appeals;
• Payment of Annuities;
• Recordation of assignment/license agreements and changes related to patents;
• Patent Portfolio Management;
• Assisting/Supporting in proceedings against patent infringement and other patent-related disputes;
• Contentious Works including Opposition, Invalidation and Cancellation.

GENERAL INFORMATION ON PATENT PROTECTION IN VIETNAM

Unpatentable Subject Matters

Under Vietnam IP Law, an invention is defined as ‘a technical solution, in form of a product or a process, to resolve a specific problem by utilising laws of nature’. Article 59 of IP Law provides the following subject matter shall not be protected as inventions:

• Scientific discoveries or theories, mathematical methods;
• Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;
• Presentations of information;
• Solutions of aesthetical characteristics only;
• Plant varieties, animal breeds;
• Processes of plant or animal production which are principally of biological nature other than microbiological ones;
• Human and animal disease prevention, diagnostic and treatment methods.

It is noted that method of treatment and other variations such as method for prevention, method for diagnosis, etc., are the subject matters that are excepted from protection under Vietnam’s patent system. Under the old patent law, in certain cases, such claims may be accepted if converted into the “Use of” or Swiss-type format. However, soon after the new IP Law was adopted in 2005, VNIPO has raised objections to ‘use-type’ claims on the grounds that they relate neither to a process nor a product, and therefore cannot be regarded as a statutory subject matter.

Computer programs are determined as a subject matter ineligible for protection as inventions (not patentable) either, under Article 59 of the IP Law. However, as recently provided in the new Examination Guidelines for Inventions, a computer program may be considered as a patent-eligible invention if the program is of a technical character and is truly a technical solution to resolve a technical problem by technical means. The program should have potential to bring about a further technical effect that goes beyond the normal physical interactions between the program and the computer. In particular, a computer program claim is acceptable if it is drafted in the form of ‘a computer-readable medium having a computer program embodied therein’.

It is worthy noted that use claims and computer program are the most sensitive subject matters that applicants should pay more attention before drafting patent specification and filing the patent application in Vietnam.

Patent Ownership

Article 86 of IP Law provides that:

1. The following organisations and individuals shall have the right to registration of an invention, industrial design and layout design:

(a) the authors who have created the invention, industrial design or layout design by his or her own efforts and expenses; or

(b) the organisations or individuals who have invested funds and material facilities to the authors in the form of a job assignment or job hiring unless otherwise agreed by the parties and such agreements are not contrary to paragraph 2 of this article.

2. The Government shall provide for the right to the registration of inventions, industrial designs and layout designs created using funds and material and technical facilities from the state budget.
3. In case more than one organisation or individual have jointly created or invested in the creation of an invention, industrial design or layout design, those organisations or individuals shall have the right to registration and such right shall only be exercised with their consensus.
4. A person who has the right to registration as provided in this article may assign that right to other organisations or individuals in the form of a written contract, passing by inheritance In accordance with the law, even when a registration application has been filed.

In line with the above provisions, the ownership of an invention made by a company employee or an independent contractor shall belong to the employer or the person who has invested funds and material facilities in the creation of the invention. If an invention has jointly been created by co-inventors or a joint venture, the ownership of the invention shall belong to the co-inventors or the individuals or companies choosing to enter the joint venture and such a right shall only be exercised with their consensus.

Patent ownership is recorded by the state by the grant of patent. The ownership of a granted patent can be transferred by an assignment agreement in written form.

Grace Period for Novelty

An invention shall not be considered having lost its novelty if it is publicly disclosed by the person having the right to register defined in Article 86 of IP Law or the person obtaining information of the invention directly or indirectly from the person having the right to register within 12 months from the date of disclosure.

The same grace period of novelty is also applied for the cases that the information of the invention is improperly published by the VNIPO or the published application was filed by a person not having the right to register.

Expedited Patent Examination and PPH Program

In order to expedite patent examination, the applicants may file with the VNIPO a request for accelerated examination, subject to payment of extra fees. However, due to a backlog at the VNIPO, such a request is rarely accepted.

Besides, providing grant information of corresponding applications from USPTO, JPO, KIPO or EPO will greatly expedite the examination process, especially if the applicant conform the pending claims of Vietnamese application to the allowed claims of such corresponding patent.

Further, VNIPO has signed two PPH program agreements: The PPH pilot program between JPO and VNIPO commenced on 1 April 2016 and the PPH pilot program between the VNIPO and the KIPO commencing on 1 June 2019. However, the number of PPH requests annually originating from JPO is only 200 and from KIPO is only 100. It is expected that the VNIPO will soon discuss signing other PPH agreements for the benefits of applicants from the United States, Europe, China, etc.

Limitations on Patent Rights

In addition to obligations of patent owners, such as to pay remunerations to inventors or to use the invention, patent rights may also be limited by the following elements:

• Right of prior users of patents

With regard to the right of prior user, where a person has, before the filing date or priority date of a patent application, used or prepared necessary conditions for use of an invention identical with the invention in such patent application but created independently (hereinafter referred to as the prior use right holder), then after a patent is granted, such person shall be entitled to continue using such invention within the scope and volume of use or use preparations without having to obtain permission of or paying compensations to the owner of the patent. The exercise of the right of prior users of inventions shall not be regarded as an infringement of the right of patent owners. The prior use right cannot be expanded or assigned, excepting being assigned together with the transfer of business or production establishments.

• Licensing of patents under decisions of state competent agencies

Patent owners are obliged to manufacture protected products or apply protected processes to satisfy the requirements of national defense, security, disease prevention and treatment and nutrition for the people or to meet other social urgent needs, otherwise the competent state agency may license such patents to others without permission of patent owners.

Patent Term & Annuity

Vietnamese  patents  become  effective  on  the  date  of  issuance  and  end  twenty  (20)  years computed  from  the  filing  date  for  inventions  (subject  to  annuity  payment),  without  any  renewal term.  The  patent  for  utility  solution  enjoys  the  term  of  ten  (10)  years  from  the  filing  date.  The patent owner of a Patent for Invention or Patent for Utility Solution is required to pay annuity fees in order to maintain its validity.

Annuities are not required for pending patent application(s). The first annuity should be paid on the date of grant of patent while the payment of the succeeding annuities must be made within the  six-month  period  prior  to  the  anniversary  of  the  grant  date.  A  late  payment  of  annuity  is available within a grace period of six months counted from the due date of annuity, subject to an extra  fee  amounting  to  10%  of  said  annuity  for  each  month  overdue.

In order to obtain the patent right in Viet Nam, Applicant must file an application for granting a Patent (for Invention and for Utility solution separately) with VNIPO or its brand offices in Ho Chi Minh City or Da Nang. Patent applications may be filed through two routes (1) Direct filing with or without claiming priority under Paris Convention; or (2) Entering into national phase under PCT Treaty within 31 months from the international filing date or from the priority date, if the priority right is claimed in the application.

FLOW CHART OF PATENT PROSECUTION PROCEDURE

Time frame from filing to grant of a patent application

It normally takes three to four years from the date of filing or entering into national phase to obtain a patent. Regardless of the filing routes, patent applications filed in Vietnam are subject to an examination procedure conducted by the Patent Examination Center of the VNIPO. The procedure includes the following basic steps:

Formality Examination

Once the application is filed, it is first examined by the VNIPO as to formality to ensure that it is complete and the information provided is accurate. The result thereof is expected available within 01 month from the filing date. If the application is rejected due to its incompliance with the formal requirements, the applicant will have 02 months for amendments or corrections.

Upon completion of the formality examination, if all formal requirements are met, or the amendments or corrections mentioned above are accepted by the VNIPO, a Decision of Acceptance of Application shall be issued to confirm the accepted filing date, the filing number and other details of the application.

Publication of Application

The application for entry into the national phase of a PCT application is published in the Industrial Property Gazette within 02 months from the date of Decision of Acceptance of Application by the VNIPO for opposition purpose. A direct application shall be published in the 19th month from the priority date or within 02 months from the date of Decision of Acceptance of Application by the VNIPO whichever comes later. During the period from the publication date to the date on which a decision to grant patent is issued, any third party may file an opposition against the pending application.

Request for Substantive Examination

Within 42 months from priority date of the invention application and 36 months from priority date of the utility solution application, a request for substantive examination must be filed with the VNIPO. Where no request for substantive examination is filed within the time limit mentioned above, the invention registration application shall be considered having been withdrawn at the expiration of that time limit.

Substantive examination

Upon a request for substantive examination being filed, the application is subsequently undergo a substantive examination to assess the patentability of the invention/utility solution and determine the scope of protection. The result thereof is expected available within 18 months from the date of filing of the request for substantive examination (if it is filed after the publication date) or from the publication date (if it is filed before the publication date).

If the invention/utility solution is considered unqualified for protection, or if it is qualified but the application still contains defects, a Notification of Intention to Refuse to Grant Patent is issued by the VNIPO and the Applicant will have 03 months for responding to the Notification and amending or correcting the application.

Upon completion of the substantive examination, if all substantive requirements are met, or if the amendments or corrections mentioned above are accepted by the VNIPO, a Notification of Intention to Grant Patent shall be issued.

Grant of patent

Within 03 months from the date of Notification of Intention to Grant Patent for invention/ultility solution, the Applicant shall have to pay the grant fees. The Patent shall then be granted within 15 days from date the applicant pays the grant fees and then published in the Industrial Property Gazette.

FILING REQUIREMENTS

* For direct patent applications

• Full name, address and nationality of the Applicant(s) and Inventor(s);
• Country, application No. and filing date of the basic application(s) if a Convention priority is claimed;
• One copy of description, claims, abstract and any text matters of drawings/tables (if any) of the invention;
• A Power of Attorney(POA) which is only simply to be signed by the Applicant (neither legalization nor notarization is required), the original must be submitted within one (01) month from the filing date for direct application;
• A certified copy of the priority documents, if a priority is claimed, must be submitted within three (03) months from the filing date for direct application;
• A Deed of Assignmentof the Priority Rights where the Applicant is different from the Applicant having filed the Priority Application of the Priority Rights. This document must be submitted within three (03) months from the filing date for direct application.

* For entry into national phase of PCT applications

• Full name, address and nationality of the Applicant(s) and Inventor(s);
• One copy of the international application (as published or as originally filed if not yet published), which should contain the following contents: description, claims, abstracts and any text matters of drawings/tables as well as any statements under PCT Articles 19 and/or 34(2)(b);
• A copy of an International Preliminary Examination Report (where available);
• A Power of Attorney(POA) which is only simply to be signed by the Applicant (neither legalization nor notarization is required), the original must be submitted within thirty four (34) months from priority date.

1. Opposition proceedings

Under the current IP law of Vietnam, any opposition to a pending patent application can be filed by a third party before an official decision on refusal or grant of registration being issued.

Opposition is not considered as a separate proceeding, it is only considered as a reference for the examination of patent applications. In other words, opposition is not examined independently, i.e. it is examined concurrently with the substantive examination of the opposed patent application.

The grounds for opposition may include, but not limited to, the application does not meet protection criteria, the applicant does not has the right to register the invention, etc.

2. Invalidation Proceedings

Any third party shall have the right to file with the VNIPO a request of invalidation against registered patent. The request of invalidation can be filed within the whole term of protection of the patent.

Grounds for invalidation include:

• The registration applicant has neither had nor been assigned the right to register an invention
• The subject matter of industrial property fails to satisfy the protection conditions at the time the patent is granted. A patent shall be partly invalidated when that part fails to satisfy the protection conditions.

* Termination proceedings: In addition to invalidation proceedings, any third party shall also have the right to file with the VNIPO a request to terminate the validity of a registered patent in case that the owner has ceased to exist without any lawful heir.

For other contentious works, please see “IP enforcement and litigation”.